Renato M. de Luna
Registered Patent Attorney
978-634-1164
Email:
Address:
197M Boston Post Road #161
Marlborough, Massachusetts 01752
Bar Membership:
US Patent and Trademark Office, 1993
Washington DC, 1991
Massachusetts, 2011
Federal Circuit, 1992
Phone:
EXPERIENCE
2011-Present
Owner
RM de Luna IP Law Office
A private practice providing corporate clients with effective and cost efficient patent preparation, prosecution, and other intellectual property related services.
2005-2010
3Com Corporation
Chief Patent Counsel
Led the global IP program for 3Com Corporation, including substantial in-house patent preparation and prosecution, and management of outside IP prosecution counsel. Pursued, responded to, and managed scores of patent and trademark litigation matters, including responding to notice letters, licensing invitations, discovery, depositions, interrogatories, ADR, mediation, trial, settlement and negotiations, and collection.
2001-2005
Assistant Patent Counsel
Millipore Corporation
Provided patent preparation and prosecution services for Millipore Corporation, a leading Massachusetts-based corporation involved in the development and manufacture of biochemical separation and filtration technologies.
1993-2001
Senior Executive; Associate Patent Counsel
Polaroid Corporation
Provided patent preparation and prosecution services for Polaroid Corporation. Initially responsible for Polaroid's graphic arts, polarizer, and holography businesses; later promoted to lead the patent program for all of Polaroid's digital imaging technologies. Substantial experience also in Polaroid's mergers, acquisitions, and divestitures; serving often as the sole and primary patent counsel responsible for negotiations, due diligence, and the drafting and/or review of all relevant agreements, memoranda, and schedules.
EDUCATION
1987-1990
WASHINGTON COLLEGE OF LAW
AMERICAN UNIVERSITY
Juris Doctor
Graduated Cum Laude; Recipient of the Don Monroe Casto Award in Constitutional Law; Concentrated on Intellectual Property.
1983-1987
COLLEGE OF ARTS AND SCIENCE
OBERLIN COLLEGE
B.A. Biology
Majored in Biology; Coursework Focussed on Biochemistry; Winter and Summer Internships (Research Assistant) at the Cornell University Medical College (Department of Cell Biology and Anatomy).
SKILLS
Patent Preparation and Prosecution
Litigation Support and Management
IP Licensing
Trademark Prosecution
Chinese IP Program Management
Patent Infringment and Validity
AREAS OF PARTICULAR EXPERTISE
Patent Preparation and Prosecution
Litigation - "Trolls"
China - IP
More than thirty years experience in the preparation and prosecution of U.S. utility patent applications with a greater than 95% rate of allowance. Representative technologies include: Digital and conventional imaging, data networking and telecommunications, biochemical and mechanical filtration and separation, eCommerce and logistics; electronic ID and biometrics; polarizers, LCDs, and photonics; holography; and stereolithography.
Extensive first-hand experience defending against infringement threats from "non-practicing entities", including the receipt of and response to initial notice letters, risk and infringement analysis; procurement and management of litigation counsel; mediation, negotiations, and settlement; and pursuing third party indemnifiers.
Substantial on-the-ground experience in U.S. corporate intellectual property practice in China, including establishing strategies for and managing sustainable, compliant, and transparent Chinese corporate patent programs; and structuring and building budget-friendly support relationships with Chinese IP service providers.